DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment has been entered. Claims 1-3, and 8-10 are pending of which claims 8-10 are withdrawn from consideration. Claims 4-7 and 11-16 are cancelled. Cancelling claims 11-16 has rendered moot rejections of claims 11-16. Adding “the crosslinking agent being capable of crosslinking with the water-soluble thermoplastic binder when heating to form a polymer with a three-dimensional structure during a heating procedure of making the green body; wherein the water-soluble thermoplastic binder accounts for 5.5 to 6.5 percent by volume of a total volume of the granulated powder, the crosslinking agent accounts for 1.0 to 1.6 percent by volume of the total volume of granulated powder, and the metal accounts for a remainder” to claim 1 has overcome rejections under 35 USC 112(a) and under 35 USC 102. Deleting “the cured green body having an enhanced green strength relative to a corresponding composition lacking the crosslinking agent under otherwise identical molding and curing conditions” from claim 1 has overcome the rejections under 35 USC 112(b).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kudo (JP6610000B2). Kudo is cited in prior office action(s). References to Kudo are directed to the examiner supplied English language translation which accompanied the office action mailed March 10, 2025.
Regarding claim 1, Kudo discloses a granulated powder (Title, [0001]) for making a green body (molded body) [0130-131]. Kudo discloses that the granulated powder comprises a metal powder (metal particles 51 [0028-29], [0042-43]). Kudo disclose that the granulated powder contains an organic binder which contains polyvinyl alcohol as a first component [0028-29], [0058-59]. Polyvinyl alcohol is a thermoplastic, and Kudo discloses that polyvinyl alcohol is water-soluble [0061-62]. Kudo discloses that the binder comprises a second component selected from the group consisting of a urethane resin, a polyester resin, and an acrylic resin [0030], [0065]. Kudo does not specify that the second component facilitates cross-linking; however, Kudo discloses polyesters as the second component [0030], [0065], [0094-95], including polyester polyols (polyester-based resin obtained by reacting a polyvalent carboxylic acid with a polyhydric alcohol [0094], hydroxyl at a molecular terminal [0095]) as encompassed by the disclosed polyester resin, and Kudo discloses that polyester has a high adhesiveness to the first binder component [0098], which is polyvinyl alcohol [0028-29], [0058-59]. Considering Kudo discloses that the polyester resin has a high adhesiveness to the first binder component [0098], and considering the present disclosure indicates that a polyester polyol structurally is a crosslinking agent (page 8 lines 5-11, Table 1), the polyester binder component disclosed by Kudo [0030], [0065], [0095-98] meets the structure of a cross-linking agent. As Kudo discloses polyvinyl alcohol in all embodiments [0028-29], [0058-59], in the embodiments wherein Kudo clearly names polyester resins, which Kudo discloses encompass polyester polyols [0030], [0065], [0094-95], [0098], one of ordinary skill in the art at the time of filing can at once envisage a species of Kudo of a granulated powder (Title, [0001]) comprising a metal powder [0028-29], [0042-43], polyvinyl alcohol (which structurally is a hydrophilic thermoplastic polymer) and a polyester resin (which has the structure of a cross-linking agent) [0030], [0065], [0094-95], [0098]. As polyvinyl alcohol is chemically different from polyester, Kudo discloses a granulated powder component which has the structure of a hydrophilic thermoplastic binder (polyvinyl alcohol) which is distinct from the granulated powder component which has the structure of a cross-linking agent (polyester resin).
Kudo discloses that the granulated powder comprises 0.2 parts by mass or more and 10 parts by mass or less of binder based on 100 parts by mass of the metal particles [0118], thereby disclosing 0.2%
100
%
×
0.2
/
100.2
≈
0.2
%
to 9.1%
100
%
×
10
/
110
≈
9.1
%
by mass of binder with a balance of metal particles. Kudo discloses that the content of the second component in the organic binder is preferably 0.3 times or more and 10 times or less the content of the first component [0074], which when applied to the overall binder composition disclosed by Kudo yields 0.018-7%
0.018
%
=
0.2
%
/
1
+
10
;
7
%
=
9.1
%
/
1
+
0.3
by mass of first component which Kudo discloses as polyvinyl alcohol [0028-29], [0058-59] and 0.046-8.3%
(
0.046
%
=
0.2
%
×
0.3
/
1
+
0.3
;
8.3
%
=
9.1
%
×
10
/
1
+
10
)
by mass of the second component which Kudo discloses may be a polyester polyol [0030], [0064], [0094-98], with metal accounting for the remainder [0118]. Kudo discloses that when the overall content of the binder comprising first and second components is within the range of 0.2 parts by mass or more and 10 parts by mass or less based on 100 parts by mass of the metal particles, it is possible to efficiently form a granulated powder while preventing significantly large particles from being granulated and preventing metal particles that are not granulated from remaining [0118]; that the moldability of the granulated particles is increased [0118]; that it is possible to make the stability of the shape of the molded body particularly excellent [0118], and it is possible to optimize the difference in size between the molded body and the degreased body to prevent a decrease in the dimensional accuracy of the finally obtained body [0118]. Kudo discloses that when content of the second component in the organic binder is 0.3 times or more and 10 times or less the content of the first component, the organic binder has both the binding force generated mainly by the first polyvinyl alcohol component and the moisture absorption resistance generated mainly by the second component [0074]; therefore, according to Kudo, the granulated particles obtained by using the organic binder have sufficient fluidity and high plasticity, and are excellent in moldability [0074]. Kudo thereby establishes that the total content of binder comprising first component of polyvinyl alcohol, which is a water-soluble thermoplastic, and second component which may be a polyester polyol affects properties of the effectiveness of granulation, and shape of the body ultimately formed from the granulated powder [0058-59], [0094-98], [0118]. Kudo further establishes that the proportion of second component to first component in the organic binder affects fluidity, plasticity, and moldability of the granulated powder [0074]. Each constituent of the granulated powder disclosed by Kudo must necessarily have some volume fraction by virtue of occupying space. Though Kudo discloses proportions of constituents by mass [0074], [0118], and not by volume, considering the effects of first and second binder components [0074], and overall binder proportion disclosed by Kudo [0118], one of ordinary skill in the art would have arrived at a granulated powder comprising a first organic binder component which accounts for some value meeting, overlapping or approaching a range of 5.5 to 6.5 percent by volume of a total volume, a second organic binder component which accounts for some value meeting, overlapping or approaching a range of 1.0 to 1.6 percent by volume of the total volume, and a remainder of metal as the result of obvious, routine optimization from within the proportions disclosed by Kudo [0074], [0118] to attain the results of adjusting proportions disclosed by Kudo [0074], [0118]. See MPEP 2144.05(II)(A-B). When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists; a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, and generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP2144.05(I-II).
Regarding the statement “for making a cured green body” in the preamble of claim 1, recitation of the intended use of the claimed granulated powder must result in a structural difference between the claimed granulated powder and the prior art granulated powder in order to patentably distinguish the claimed invention from the prior art; if the prior art structure is capable of performing the intended use, then it meets the claim. Further, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation See MPEP 2111.02(II). Considering, claim 1 appears to completely set forth the structure of the claimed granulated, Kudo discloses forming a product from the granulated product with at least some degree of improved strength under some conditions [0031], [0037], [0061], [0162], [0167], and considering the breadth of the statement “for making a cured green body”, the structure disclosed by Kudo, applied above, would be structurally capable of at least some use for making a cured green body.
The limitation “the crosslinking agent being capable of crosslinking with the water-soluble thermoplastic binder when heating to form a polymer with a three-dimensional structure during a heating procedure of making the green body”, defines the structure of the claimed granulated powder by how the granulated powder is used. The present disclosure states “[f]rom a chemical reaction perspective, with the thermoplastic binder which is PVA or PVB as an example, the hydroxyl groups of PVA or PVB can combine with the epoxy resin and polyester resin to form a polymer with a three-dimensional structure, thus increasing the strength and structure stability” (page 10 lines 19-24). This is the only portion of the specification which discusses forming a polymer with a three-dimensional structure during a heating procedure of making the green body. The specification, therefore, suggests that a granulated powder comprising PVA and a polyester resin meets the structure of a granulated powder comprising a cross-linking agent, wherein the crosslinking agent being capable of crosslinking with the water-soluble thermoplastic binder when heating to form a polymer with a three-dimensional structure during a heating procedure of making the green body. As Kudo discloses that the granulated powder comprises both PVA and a polyester resin [0028-30], [0065], [0094-95], [0098], the granulated powder disclosed by Kudo, applied above meets the structure of a granulated powder comprising a cross-linking agent wherein the crosslinking agent being capable of crosslinking with the water-soluble thermoplastic binder when heating to form a polymer with a three-dimensional structure during a heating procedure of making the green body. Kudo further discloses that the terminal groups of the polyester is preferably a hydroxyl (polyester resin preferably contains a hydroxyl group or a carboxyl group at a molecular terminal [0095]). The image in applicant’s remarks with supporting, additional example filed March 19, 2026 show terminal hydroxyl groups of a polyester polyol as the structure which performs the cross-linking reaction with PVA, thereby providing further evidence that the polyester resin disclosed by Kudo [0094-95], [0098] meets the structure of the presently claimed cross-linking agent.
Regarding claim 2, Kudo discloses that the granulated powder is prepared through spray-drying a mixture (slurry) of metal powder, the first organic binder component and the second organic binder component [0118], [0123-124].
Regarding claim 3, Kudo discloses that the average particle diameter of the metal powder is 1 μm or more and 30 μm or less [0049], and Kudo considers the median (D50) the average particle diameter [0054]; therefore, Kudo discloses that the median particle size of the metal powder ranges between 1 µm and 30 µm which overlaps the claimed range of 0.2 μm and 20 μm. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant’s comment on support for the presently filed application is noted. Though the disclosure of a green body molded from granulated powder comprising binder and cross-linking agent, is sufficient to support “the crosslinking agent being capable of crosslinking with the water-soluble thermoplastic binder when heating to form a polymer with a three-dimensional structure during a heating procedure of making the green body”, the comments regarding a polyol terminal performing the cross-linking are not commensurate in scope with the claim. Not all epoxy or polyesters are hydroxyl-terminating polyols. Further, the comment “the polyol is preferably present at less than half the amount of PVA” is not present in the disclosure as filed and does not appear to be supported by evidence that this particular composition range is critical to cross-linking results.
Regarding the presently entered claims with respect to Kudo (JP6610000B2), applicant argues that the composition ranges disclosed by Kudo cannot be compared with the claimed composition ranges because Kudo discloses proportions in weight percentages whereas the present claim recites proportions in volume percentage. This argument is not persuasive because the components disclosed by kudo, applied above, must necessarily have some volume by virtue of occupying space; Kudo discloses the effects of relative proportions of binder constituents [0074], [0118], thereby establishing proportions of constituents as results effective variables; and the proportions disclosed by Kudo [0074], [0118] are sufficiently broad that considering the relative densities of PVA and polyester, if the proportions disclosed by Kudo [0074], [0118] were measured as volume fractions, those measurements would be expected to overlap, approach, or encompass the claimed ranges. Note the examples in MPEP 2144.05(II) which support a prima facie showing of obviousness over prior art references which disclose all components, though not necessarily in the same proportions, of a challenged claims and reasons for adjusting the proportion of such components. Note also MPEP 716.02 and subsections which indicate that a mere difference in degree is not sufficient to amount to a nonobvious difference in kind.
Applicant’s arguments that the proportion disclosed by Kudo is broad compared to the narrow, presently claimed ranges are not persuasive because these arguments are not supported by evidence that the narrower range is critical to some unexpected result, commensurate in scope with the claims. MPEP 2144.05 has several examples wherein overlapping/encompassing ranges are sufficient for a prima facie showing of obviousness. The showing of obviousness is further supported by Kudo’s establishment of relative proportions of binder constituents as results effective variables [0074], [0118].
Arguments that Kudo discloses the role of the second component is balancing hygroscopicity to prevent the powder from absorbing too much moisture, whereas the presently claimed granulated powder uses a crosslinking agent specifically to react with the water-soluble thermoplastic binder upon heating, are not persuasive because applicant does not support these arguments with evidence that the differences in purpose/use of the component amount to differences in structure between the claimed granulated powder and the granulated powder disclosed by Kudo. Kudo discloses that the binder component is a polyester resin [0030], [0065], [0094-95]. Further, Kudo discloses that the binder component preferably contains hydroxyl on molecular terminals [0095] and that the polyester-based resin obtained by reacting a polyvalent carboxylic acid with a polyhydric alcohol [0094], and a hydroxyl-terminated polyester obtained by reacting a polyvalent carboxylic acid with a polyhydric alcohol is a polyester polyol. Claim 1 claims polyester resins or polyester polyol resins as structure of the claimed crosslinking agent. Polyester resin or polyester polyol resin disclosed by Kudo [0065], [0094-95], [0098] meets the structure of a polyester resin or a polyester polyol resin. Further, the image which accompanies applicant’s remarks shows the terminating hydroxyls of a polyester polyol as the structure which is capable of performing the crosslinking function. As Kudo discloses that the polyester resin preferably comprises a hydroxyl [0095], Kudo discloses chemical structure which applicant establishes as capable of performing the crosslinking with the water-soluble thermoplastic binder when heating to form a polymer with a three-dimensional structure during a heating procedure of making the green body function.
Arguments that Kudo discloses a ratio of second binder component to first binder component of 0.3 to 10, whereas the ranges in claim 1 calculate to a range of 0.154 to 0.291 are not persuasive, largely because a range of 0.3 to 10 closes approaches a range of 0.154 to 0.291, and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05(I)). Kudo’s teaching of a range of 0.3 to 10 [0074] does not teach away from a value of 0.3. As with overlapping ranges, the discussion of approaching ranges in MPEP 2144.05(I) focuses on property differences resulting from the range(s) at issue. In the present case, applicant’s statements showing support for the amended values indicate that the cross-linking results may be achieved with a ratio of half or less of crosslinking agent to thermoplastic binder. A ratio of one half (value of 0.5) lies within a range of 0.3 to 10; therefore, even applicant’s arguments show that some values within the range disclosed by Kudo [0074] would meet the properties of granulated powder comprising thermoplastic binder and cross-linking agent in presently claimed proportions. The materials, ranges, and proportions disclosed by Kudo, relied upon above remain sufficiently close to those claimed, that absent a showing, commensurate in scope with the present claims, that the claimed granulated powder yields nonobvious results over that disclosed by Kudo, applied above, that the granulated powder disclosed by Kudo would be predicted to have properties of or near those of the presently claimed granulated powder.
Comparison of examples disclosed by Kudo against inventive examples 5, 6, and 7 of the present disclosure are not persuasive in showing that the presently claimed granulated powder yields unexpected results over that of Kudo because examples 5, 6, and 7 of the present disclosure do not meet the composition limitation of the presently claimed granulated powder. Example 5 has 4.1% thermoplastic binder (4.1% PVA); example 6 has 4.1% thermoplastic binder (3.9% PVA, 0.2% PEG), and example 7 has 4.1% thermoplastic binder (2.9% PVA, 1.2% PEG). Present claim 1 claims “thermoplastic binder accounts for 5.5 to 6.5 percent by volume of a total volume of the granulated powder”. Not only does MPEP 716.02 require the unexpected results be commensurate in scope with the claimed invention, but MPEP 716 as a whole requires a nexus between the claimed invention and secondary evidence of nonobviousness.
Arguments that the disclosure of Kudo would require undue experimentation to produce the granulated powder in the ranges disclosed by Kudo are not persuasive because Applicant does not support this arguments with evidence of inoperability, as described in MPEP 2121. Kudo discloses components [0028-30], [0058-59], [0061-62], [0065], [0094-95], [0098]; proportions [0074], [0118] and process of making [0118-124]. Kudo provides more than sufficient instruction to one of ordinary skill in the art as to how to make or use the granulated powder comprising constituent components disclosed by Kudo.
Arguments that the presently claimed invention yields unexpected results over that of Kudo, are not persuasive because the results are not commensurate in scope with the claimed ranges. The newly presented results have a composition of metal/binder 100:1, whereas the presently claimed granulated powder claims the water-soluble thermoplastic binder accounts for 5.5 to 6.5 percent by volume of a total volume of the granulated powder, the crosslinking agent accounts for 1.0 to 1.6 percent by volume of the total volume of granulated powder. The argued results appear to include significantly less binder than that claimed. Further, claim 1 claims the water-soluble thermoplastic binder is selected from the group consisting of polyvinyl alcohol (PVA), polyvinyl butyral (PVB), polyvinyl pyrrolidone (PVP), polyethylene glycol (PEG), hydrolyzed polymaleic anhydride (PMA), and combinations thereof, and wherein the crosslinking agent is selected from the group consisting of epoxy resins, polyester resins, polyester polyols, and combinations thereof, whereas the newly presented results only show one example with one type of cross-linking reaction, which is not commensurate in scope with the claimed ranges. A comparison of one example having a lower amount of binder than the claimed granulated powder with one example encompassed by the disclosure of Kudo is not sufficient to show that the scope of the presently claimed granulated powder yields unexpected results over the granulated powder disclosed by Kudo.
Applicant argues for the patentability of dependent claims through their dependence on independent claim 1. This argument is not persuasive for the reasons given above with respect to limitations presented in independent claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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